In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing a filing date without starting the patent-term clock, obtaining additional time (e.g., to study the market, raise funds, etc.), delaying further costs associated with a regular application, delaying examination, and avoiding the need for immediate formalities, among others.
Yet, despite the numerous advantages of first filing provisional patent applications, there are also various disadvantages that companies and inventors should keep in mind when developing a patent filing strategy and deciding the role of provisional patent applications in that strategy. Some of these disadvantages are described below.
1. False sense of security
By filing a provisional application, a patent applicant can establish a U.S. filing date for an invention. Having the benefit of an early filing date is advantageous for various reasons. For example, an applicant can establish his or her priority in that invention over other later potential patent filers seeking to protect the same or a similar concept. And, a later issued patent provides patent rights to its owner retroactively as of the date of the earliest provisional application to which priority is claimed. Nonetheless, as explained below, the filing of a provisional application can in some cases be an illusory sense of comfort for the applicant.
A. Will not issue into a patent
A provisional application is not examined by the U.S. Patent and Trademark Office (USPTO), and therefore it never itself issues into a patent. On its own and without any further action, filing a provisional application does not result in any patent rights. For a provisional application to generate any enforceable rights, it must first be converted into a non-provisional application (often referred to as “regular” or “conventional” application) within one year of its filing. Once a regular application is filed, it is examined by the USPTO and may later issue as a patent, resulting in patent rights for its owner, which as described below extend only to adequately disclosed subject matter. If a provisional application is never converted into a regular application, it will expire without being examined by the USPTO, and patent rights in the inventive concept that is described in the provisional application may be forfeited.
Applicants should keep in mind that, if a provisional application is filed, such a filing is just one of many steps in a process to obtain patent rights in an invention. In addition, unlike regular applications, which when filed trigger an action by the USPTO (i.e., the review of the application), filing a provisional application does not cause any such USPTO action. Applicants must therefore be diligent in converting the provisional application to a regular application before the one year due date to avoid forfeiting any rights.
B. Insufficiently disclosed concepts do not receive protection
Provisional applications, just like regular applications, must describe an invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”1 An applicant who converts a provisional application into a regular application, and claims the benefit of the filing date of the provisional application, will not have that benefit extend to the subject matter that is inadequately disclosed (i.e., it does not enable a person skilled in the art) in the provisional application, even if it is later sufficiently described in the regular application. In such a case, if the regular application later issues into a patent, the patent rights afforded by the issued patent may be limited or not enforceable against others who practice the invention during the time after the filing of the provisional application and before the filing of the regular application. In other words, the patent owner’s rights exist and date back only as far as the filing date of the provisional or regular patent application in which the subject matter is adequately described.
Applicants should be cautious not to conclude that their inventions will receive the benefit of the filing date of a provisional application merely from its filing or the mention of inventive concepts therein. Instead, these applicants should ensure that any provisional application filed includes enough detail about the invention to satisfy the requirements of 35 U.S.C. § 112.
In some circumstances, it is necessary to prepare and file a provisional application in a matter of hours or just a few days, for example, to beat an impending public disclosure date of the invention which can impact the ability to obtain patent protection on that invention. In such cases, some concepts may inevitably be described with less-than-optimal specificity, such that those aspects of the invention are not supported by or do not benefit from the provisional application.
Applicants should consider filing a follow-on provisional application as promptly as possible, adding any details omitted from the initially filed provisional application. Both provisional applications should then be converted into a single regular application by the one year date of the earliest provisional application, to ensure that no rights are forfeited.
C. Late improvements and new matter do not receive the benefit of the original filing date
Late improvements and other modifications to an invention may be deemed to be “new matter” relative to the invention described in a provisional application. Much like the inadequately described concepts discussed above in section 1(B), new matter will not receive the benefit of the original filing date of a provisional application. In many cases, inventive concepts are improved or changed after a provisional application is filed. For instance, a new step or an additional feature can be added to a process or system, respectively. Those later added improvements or modifications are deemed to be new matter that is not supported by the initial filing and thus do not benefit from the original filing date. Any resulting patent would not provide patent rights for those improvements or modifications as of the original filing date of the provisional application.
If improvements, modifications or other changes that would potentially be considered new matter relative to a provisional application are developed, applicants should consider filing a follow on provisional application describing those improvements in detail, to ensure that the new matter can benefit from the earliest possible filing date.
2. Delays examination
As mentioned above, provisional applications are not examined by the USPTO. Only regular applications are reviewed by the USPTO to determine whether a patent based on the subject matter described in that application can issue. Thus, by first filing a provisional application followed by a regular application (up to one year later), the time that it will take the USPTO to review the application and/or issue a patent can be delayed an additional year. It is often desirable or beneficial for an applicant to obtain a patent as soon as possible, for example, to show that its product is proprietary and thereby improve his or her ability to raise funds and/or establish a position in the relevant market. Such a delay would therefore be undesirable for that applicant.
Applicants should closely consider the timing related pros and cons of filing a provisional application. If an applicant wishes to have an application reviewed promptly by the USPTO or obtain patent rights in its invention as early as possible, the applicant should bypass the provisional application step in favor of filing a regular patent application, to avoid unnecessary delays.
3. Added cost
Filing a provisional application requires preparing a disclosure document, preparing and filing a USPTO form document, and paying a minimal fee ($260). The disclosure document, which describes the invention in detail, often serves as the basis for the specification that must later be filed with a regular application. Yet, while the preparation of the disclosure document of the provisional application can reduce the amount of work later required to prepare the regular application, even in cases where a provisional application is thoroughly drafted, there is still additional work and therefore costs that need to be incurred to prepare the regular application, for example, to ensure that it meets the USPTO’s formality requirements.
As a result, filing a provisional application before filing a regular application can result in additional expenses for applicants as compared to only filing a regular application. These additional expenses can range from just a provisional filing fee ($260) to a substantial transformation of the text of the provisional application into proper detail and form for a regular application. And, these added costs are multiplied when it is necessary to file more than one provisional application.
Applicants should be mindful of their budgets when determining the role of provisional applications in their patent portfolio strategy. If an applicant will not otherwise benefit from filing a provisional application, it may be appropriate to file a regular application and not file a provisional application, to avoid any avoidable expenses.
4. Loss of trade secret
A provisional application is not initially accessible to the public. If that provisional application is later converted into a non-provisional application that issues into a patent, the provisional application will become public. Accordingly, care should be taken not to include any trade secret, confidential, or other sensitive information in the provisional application. Otherwise, when the provisional application is later made public, the trade secret or confidential status of that information can be lost.
Trade secret information should be closely supervised and all efforts made to exclude it from patent applications, whether or not the applicant has any intention to later file a regular application or any expectation that the regular application will issue into a patent.
There are many potential advantages and disadvantages to filing provisional applications. Each inventor and invention is unique, and it is therefore important for applicants to closely consider the appropriateness of filing a provisional application or a regular application, preferably together with a patent attorney.
 35 U.S.C. § 112(a).
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.